Roundabout 2016

The Copyright Office, earlier under the Department of Higher Education, Ministry of Human Resource Development, is now brought under the Department of Industrial Policy & Promotion, Ministry of Commerce and Industry with effect from the year 2016.

India remained in the US Priority watch list that identifies trade barriers to US companies due to IP laws of other countries. "It remains on the watch list for lack of sufficient measurable improvements to its IPR framework despite more robust engagement and positive steps forward on IPR protection and enforcement undertaken by the Govt. of India," said the Office of USTR, an agency of the US Govt., in its annual special 301 report. The Priority watch list was released in April 2016, following which the new National IPR Policy was released by the Govt. of India in May 2016. The US Chamber of Commerce welcomed the move and hopes it is a precursor to concrete, structural changes necessary for implementation of a strong innovation model. The Policy is expected to weigh in favour of India from making it out of the watch list in future.

The National IPR Policy was released by the Department of Industrial Policy and Promotion on May 12, 2016. This Policy succeeds the First Draft which was released in December 2014 and strives to stimulate a dynamic, vibrant & balanced IPR system in India, fostering creativity & innovation, thereby promoting entrepreneurship and enhanced socio-economic and cultural development. It hopes to be a precursor for further strengthening of IPR laws.

The Patents (Amendment) Rules 2016, was published on 16th May 2016 by the Govt. of India, Ministry of Commerce and Industry (Dept. of Industrial Policy & Promotion), in the Gazette of India, Extraordinary and made effective from the date of publication. It is available on the official website of DIPP and IPO India and some of the key highlights of the Amendment Rules 2016 are the incorporation of the definition of start-up (Rule 2 (fb)), inclusion of a clause for expedited examination (Rule 24C), and compulsory filing through electronic transmission when filed by a patent agent (Rule 6(1A)).

Commerce and Industry Minister Ms. Nirmala Sitharaman said in a statement to the press that a start-up would now need only a certificate of recognition from the Govt. to avail IPR-related benefits. This move has been brought out by the Govt. of India in order to improve the ease of doing business. Earlier to this move, in order to procure IPR-related benefits, an entrepreneur had to go through an elaborate process of approaching an inter-ministerial board. The certificate of recognition should still be obtained from the inter-ministerial board of certification but the process has been made simpler.

Following the release of the new National IPR Policy, the European Patent Office (EPO) has offered to expand its cooperation with India, on seeing a large margin of improvement for the Indian IPR regime. EPO President Mr. Benoit Battistelli said that India has all elements to becoming a great player in the IP space with a vast talent pool of well-qualified people and a huge knowledge economy.

IPAB, Chennai is without a Chairman since Justice K.N.Basha attained superannuation on May 13, 2016. An article dated July 28, 2016, published in The Hindu, quoted the Commerce Minister, Ms. Nirmala Sitharaman, as saying in a written reply in Rajya Sabha that the proposal to fill the post is still under consideration. She was also quoted as saying that with a view to strengthen IPAB, Chennai, a Plan Scheme named "Modernization and Strengthening of IPAB" has been approved at a total cost of Rs. 14.70 crores under the 12th Plan. The proposed scheme includes provisions for construction of permanent building of IPAB at Tondiarpet in Chennai, creation of additional posts and upgradation of infrastructure facilities.

Lee Pharma Ltd. filed for an application seeking Compulsory Licence under Section 84(1) of the Patents Act, 1970, as amended, for manufacturing and selling the compound SAXAGLIPTIN (for the treatment of Type-II Diabetes Mellitus), protected by Patent no. 206543. The grounds for making the application were that the reasonable requirements of the public with respect to the patented invention have not been satisfied, that the patented invention is not reasonably affordable for the public, and that it is not worked in the territory of India. The application was made after the expiry of the mandatory prerequisite of 3 years from the date of grant of patent. Since a prima facie evidence was not made out by the applicant, a hearing was scheduled. The applicant however, failed to provide authentic data/statistics as proof and solely relied on assumptions. Since the applicant failed to provide evidence along with the application as well as during the hearing, the applicant failed to satisfy the Controller regarding the grounds specified in Section 84(1) of the Act and the application for grant of compulsory licence was thereby rejected, dated 19th January 2016.

FSS is in the business of providing online, real time, and electronic transaction processing services and has been continuously using "FSS" as its trademark/service mark ever since 1991 and has registered "FSS" under the Trade Marks Act, 1999, with effect from 2000. Brilliant Tutorials is an institution offering educational services (postal education, coaching classes, etc.) and has a software development division "Firstware Software Solutions", abbreviated as FSS. FSS Pvt. Ltd. filed an application seeking ad interim injunction restraining Brilliant Tutorials to cease and desist from using "FSS", alleging that the use of "FSS" by Brilliant Tutorials is with malafide intentions and an act of free riding on the reputation built by FSS Pvt. Ltd. The High Court of Madras, deliberated upon whether mere use of the acronym FSS along with the full name Firstware Software Solutions would amount to passing off and whether the plaintiff proved the acts of passing off alleged against the defendant and came to a conclusion in favour of the plaintiff as the act of passing off by the defendant was answered in affirmative, following the admission made in the written statement as well as in D.W.1 in the proof of affidavit in lieu of chief examination, that they have immediately removed the letters "FSS" from their website on receipt of summons in the suit. Since Brilliant Tutorials conceded that it used the mark "FSS" which was duly registered by FSS Pvt. Ltd., the Court directed Brilliant Tutorials to pay damages to the tune of Rs. 2,00,000 and granted a permanent injunction.

Oxford instituted a suit for the relief of permanent injunction restraining the two defendants Rameshwari Photocopy Service (carrying on business from Delhi School of Economics, University of Delhi) and the University of Delhi, from infringing their copyright in their publications by photocopying, reproduction and distribution of copies of plaintiffs' publications on a large scale and circulating the same, and by sale of unauthorised compilations of substantial extracts from the plaintiffs' publications by compiling them into course packs/anthologies for sale. The High Court of Delhi, however, opined that issuing a book to each student for a limited period and enabling each student to photocopy the passages or the contents thereof required by him "in the course of instruction" would expose the book to damage, and hence to prevent such damage, the University of Delhi itself is supplying the said photocopies. The Court further stated that while it may be possible for a student in a class of say 10 or 20 students to have the book issued from the library for a month and to laboriously take notes therefrom, the same is unworkable where the number of students run into hundreds or thousands. The Court held that, what is permissible for a small number of students cannot be viewed differently, merely because the number of students is larger and the same would not convert, what was not an infringement into an infringement. It was therefore concluded that the actions of the defendants do not amount to infringement of copyright of the plaintiffs.

ICSAC appealed to the Supreme Court of India against the orders passed by Division Bench of High Court of Delhi. The issue involved in the appeals was that where lyrics of a song are written by 'X' (lyricist) and the music composed by 'Y' (musician) are used to make sound recording by 'Z' (Sound Recording Company), whether 'A' (Event Management Company/Event Organizer) is required to seek licence from 'X' and 'Y' for subsequently playing the song in public even after 'A' had paid for the broadcasting of the song to 'Z'. The case of ICSAC was that authors of literary work and composers of musical work are the first owners of copyright under the Copyright Act, 1957 and that the licence given to the sound recording company does not affect the rights of the lyricist or musician. The stance taken by the respondents was that the producer of a sound recording has an independent copyright of his work, relying on the law laid down by the Court in IPRS vs. Eastern Indian Motion Pictures Association. The earlier order passed by the Division Bench ruled in favour of the respondent, depriving the lyricist and musician of their exclusive right to collect royalty in cases of communication to public by stating that the sound recording company does not have to secure a licence from them. The Supreme Court, on careful deliberation of the case, wholly agreed to the observations and views expressed by the High Court that the argument of the appellant that permission granted to the respondent was sans the right to communicate to public cannot be held as there appears no such term and condition between the parties. It was however clarified that in view of Section 19(10), with effect from 21/6/2012, the assignment of the copyright in the work to make a sound recording which does not form part of any cinematograph film, shall not affect the right of the author of the work to claim an equal share of royalties or/and consideration payable for utilization of such work in any form by the Plaintiff/Respondent. The Court thus disposed off the appeal.

Cadila Healthcare contended the judgement and decree dated 3/6/2016 in which the learned Single Judge had granted both the reliefs of rendition of accounts as well as of liquidated damages (despite the relief of rendition of accounts not being pressed by Sun Pharma), by way of an appeal to the High Court of Madras. The grounds for appeal stated that as per Section 135 of the Trade Marks Act, 1999, in a suit for infringement or passing off, the plaintiff is not entitled to get both the reliefs of rendition of accounts as well as liquidated damages. The original suit was for the infringement of Sun Pharma's trademark by Cadila Healthcare as the mark adopted by Cadila (VENZ) was phonetically, visually and structurally similar to that of Sun Pharma's registered trademark (VENIZ) and the Single Judge had granted relief of perpetual injunctions, rendition of accounts and damages of Rs. 3 lakhs to Sun Pharma. Since the argument advanced by the counsel appearing for Cadila, based on the provisions of Section 135 of the TM Act, was found to have subsisting force, the Appeal was allowed without costs and the relief granted in respect of rendition of accounts was set aside. In respect of other reliefs, the judgement and decree passed by the learned Single Judge stood confirmed.

The world famous Harvard University, the alma mater to seven US Presidents, 37 Nobel Laureates, 30 Pulitzer Prize winners, has acquired common law rights in the mark "Harvard" by virtue of extensive use & world wide recognition amongst the public, and further acquired statutory rights in India by registering the brand in the relevant classes. Rajesh Goyal had applied for registration of the trademark "Harvard" in respect of readymade garments in June 2013, only to get served by a cease and desist notice from Harvard University bringing to his notice that they were the true and legal owners of the mark. Rajesh Goyal however failed to reply to the legal notice and another legal notice was sent to him which also failed to generate a reply. Two years later, Harvard University learnt that Rajesh Goyal had started selling readymade garments under the mark, following which this suit was initiated in the High Court of Delhi. The plaint and relevant documents were filed and the defendant was served notice on 1/9/2016, but no written statement was filed by him despite the expiry of the statutory period of 30 days. The defendant took a stand in Court that the defendant is ready to suffer a decree provided that Harvard does not press for damages. As there was no written statement from the defendant, the averments made in the plaint remained unrefuted and the Court passed an order in favour of Harvard University, directing the defendant to destroy all infringing goods containing the mark "Harvard" within two weeks from the date of order.

GlaxoSmithkline Pharmaceuticals, market leaders in respect of pharmaceutical products in India, have been using the acronym GSK (derived from the company name) since 2000 and are a registered proprietor of the mark "GSK" in various classes. It came to their knowledge in April 2009 that a company by name of GSK Life Sciences Pvt. Ltd., apart from using the acronym "GSK" as part of their trade name, were also using a drop shaped logo inscribed with the letters "GSK", exactly similar to that of GSK Pharma's logo. Thus, a cease and desist notice was immediately sent by GSK Pharma to GSK Life Sciences, followed by letters to amicably settle the dispute. However, the defendant responded stating that "GSK" was an acronym for the initials of his name Dr. Gadikota Sarath Kumar Reddy, following which an infringement suit was instituted in the High Court of Delhi by GSK Pharma. During prosecution, it was established that "GSK" was the registered trademark of GSK Pharma with respect to pharmaceutical and medicinal preparations. It was also evident that the defendant is operating in the field of pharmaceuticals and thus the use of "GSK" in its corporate as well as trade name constitutes infringement of GSK Pharma's registered trademark. The Court also concurred that the logo adopted by the defendant is deceptively similar to that of GSK Pharma. However, GSK Pharma was not able to quantify any loss caused by use of trademark "GSK" by the defendant, and hence the Court did not entitle them to their claim for damages. Nevertheless, an order for permanent injunction restraining the defendant from using the name/mark/logo GSK as their trademark was passed. GSK Pharma were also awarded costs.

Mandev Tubes, a manufacturer, supplier and distributor of copper tubes, has been in the business for over 45 years. It sought protection of its registered designs (registration # 224751) in respect of copper tubes, alleging infringement and passing off by Kalpesh R. Jain and two of its former employees. The design was registered claiming originality and novelty in the conception that each end of the copper tube has an expanded bell shape. In February 2015, Mandev Tubes learnt of the defendant's rival product being sold in the market, having remarkable similarity to that of their product and instituted this infringement suit in the High Court of Bombay. The defendants claimed that there was a technical difference between the two designs - the angle of curvature of the bell-ending was 90° in Mandev's copper tubes while that of theirs was only 45°. The Court however, dismissed this saying such minute differentiations are not sufficient to defeat an otherwise good claim. Another contention of the defendant was that the design was prior known in the industry and that it was disclosed by Mandev Tubes itself by way of advertisement in a magazine prior to the date of application of design. The Court dismissed this too on the grounds that there is no evidence ascertaining the same. Also, considering the defendants' past association with Mandev Tubes until after the registration of the design in the Suit, the Court stated that the circumstance weighs heavily against them as the market is for an identical product. The Court also noted that the extent of copying is almost complete as the rival product incorporated even the yellow caps specially designed to fit the ends of the copper tubes as in that of the registered design. Therefore, since the balance of convenience undeniably favours Mandev tubes, the Court ordered that the offending goods be confiscated and sealed; no order of costs was made.

Following the demonetisation drive in the country, Paytm - the Indian e-wallet service, has been in the news for using every opportunity to promote itself and its digital payment services. PayPal, the popular online payment service provider, has now filed an opposition claim against Paytm trademark application. PayPal's contention is based on two grounds – the first being the similarity in logo, design and colour scheme (both logos consist of two similar shades of blue) and the second being the similarity in name (prefixed by "Pay"). Although Paytm has been in use for a while now, the trademark application was made only on 18th July 2016. PayPal's move to file their claim last minute (only after the demonetisation drive and increase in popularity of Paytm) has been condemned by many, raising questions on their real motive as they are still not doing business in India.

For information purpose only.
Reference to any Trademark in this newsletter relates to news about its respective company. The said TM is proprietary of such company.